The Complainant is Eveready Battery Company, Inc. of St. Louis, Missouri, United States of America, represented by Bryan Cave LLP, United States of America.
The Respondent is PrivacyP, Domain Admin of Nobby Beach, Queensland, Australia / Zlatan Filipovic of Zagreb, Croatia. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 21, 2013. On February 21, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 22, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 22, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 27, 2013.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint and the amended Complaint, and the proceedings commenced on February 28, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 20, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 21, 2013.
The Center appointed Cherise Valles as the sole panelist in this matter on April 9, 2013. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The relevant trademark in this Complaint is EVEREADY which the Complainant uses in connection with dry cell batteries and flashlights. The Complainant, Eveready Battery Company, Inc., is one of the world’s largest manufacturers of dry cell batteries and flashlights. The history of Eveready Battery Company and its parent company, Energizer Holdings, Inc., dates back to 1886 when its predecessor, National Carbon Company, was formed. The Complainant, through the National Carbon Company, marketed the very first battery for consumer use in 1896. Today, the Complainant and its parent company market and sell batteries and related products in more than 100 countries around the world. Its primary consumer battery lines include the EVEREADY line (e.g., EVEREADY GOLD and EVEREADY SUPER HEAVY DUTY) and the world famous ENERGIZER brand.
Since at least as early as the 1920’s, the Complainant has continuously used the EVEREADY mark in connection with batteries, flashlights and many other related goods. The Complainant holds numerous registrations for variations of the trademark EVEREADY in the United States of America and around the world (collectively, the “EVEREADY Marks”).
The disputed domain name was registered on December 16, 2012. 5. Parties’ Contentions A. Complainant
The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, in its amended Complaint filed on February 27, 2013, the Complainant asserts that:
The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
- The disputed domain name is confusingly similar or identical to the Complainant's registered trademark, EVEREADY, in light of the fact that it wholly incorporates the Complainant's mark.
The Respondent lacks rights or legitimate interests in the disputed domain name.
- The Complainant states that the Respondent should be considered as having no rights or legitimate interests in the disputed domain name. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name that included its trademarks.
The disputed domain name has been registered and is being used in bad faith.
- The Complainant asserts that the disputed domain name was registered in bad faith. The mere fact of registration of a domain name that is confusingly similar or identical to a famous trademark by an entity that has no relationship to that mark is itself evidence of bad faith registration and use.
The Complainant requests the Panel to issue a decision finding that the disputed domain name be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy. B. Respondent
The Respondent has not filed a response to the Complainant’s contentions. 6. Discussion and Findings
The Policy provides specific remedies to trademark owners against registrants of domain names where the owner of the mark (the complainant) establishes each of the following elements:
(a) the domain name is identical or confusingly similar to a trademark in which the complainant has rights;
(b) the respondent has no rights or legitimate interests in respect of the domain name; and
(c) the domain name was registered and is being used in bad faith.
The Complainant has the burden of proof in establishing each of these elements.
The Respondent has failed to file a response in these proceedings and is therefore in default and the Panel may draw appropriate inferences from the available evidence. A. Identical or Confusingly Similar
To prove this element, the Complainant must have trademark rights and the disputed domain name must be identical or confusingly similar to the Complainant’s trademark.
The Complainant is the sole and exclusive owner of the EVEREADY mark. The mark has been in use in commerce since the 1920’s. The Complainant has submitted evidence in Annex 5 to the Complaint demonstrating that it is the owner of multiple trademark registrations in the United States for the mark EVEREADY including the following:
1. EVEREADY (U.S. Registration No. 3,176,936) for “batteries,” in International Class 9;
2. EVEREADY (U.S. Registration No. 1,944,297) for “batteries, namely carbon-zincbatteries, alkaline batteries, photoelectronic batteries, rechargeable batteries, hearing-aid batteries, battery chargers” in International Class 9;
3. EVEREADY (U.S. Registration No. 1,032,879) for “electric battery chargers” in International Class 9;
4. EVEREADY (design plus words, letters, and/or numbers) (U.S. Registration No. 1,495,668) for “batteries” in International Class 9;
5. EVEREADY GOLD (U.S. Registration No. 2,743,471) for “batteries” in International Class 9; and
6. EVEREADY SUPER HEAVY DUTY (U.S. Registration No. 1,925,149) for “batteries” in International Class 9.
The Complainant also submitted a listing of over 800 registrations for EVEREADY outside the United States in Annex 6 to the Complaint.
The Complainant and its related companies also own other domain names that contain the term “Eveready”, including , , and . The Complainant submitted a list of its domain name registrations incorporating the EVEREADY Mark in Annex 8 to the Complaint.
The Panel finds that the Complainant’s marks are distinctive and that the disputed domain name is confusingly similar to the EVEREADY marks. The disputed domain name contains the mark. The “fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy.” Six Continent Hotels, Inc. v. The Omnicorp,WIPO Case No. D2005-1249. Previous UDRP panels have accepted that “[g]enerally, a user of a mark ‘may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or nondistinctive matter to it.’” J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23:50 (4th ed. 1998) cited in Pfizer Inc. v. United Pharmacy Ltd.,WIPO Case No. D2001-0446.
The disputed domain name, , wholly incorporates and is thus confusingly similar to the Complainant’s EVEREADY mark; See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525 (“when a domain name wholly incorporates a complainant’s registered mark, that is sufficient to establish identity or confusing similarity for purposes of the Policy”). The test of identity or confusing similarity under the Policy compares the complainant’s mark with the domain name, without regard to the goods or services for which the domain name is used. Board of Supervisors of Louisiana State University and Agricultural and Mechanical College v. PrivacyP / Dmitry Branitsky,WIPO Case No. D2011-1681.
The disputed domain name is identical to the Complainant’s EVEREADY mark except that the disputed domain name adds the term “inc” to the Complainant’s mark and combines the generic top-level domain “.com.” The addition of the term “.com” is irrelevant as it is functional to domain names and does not serve to distinguish source. See Anti Flirt S.A. and Mr. Jaques Amsellem v. WCVC,WIPO Case No. D2000-1553; Donvand Limited trading as Gullivers Travel Associates v. Omniscience,WIPO Case No. D2002-0746 (holding that the domain name was identical to the trademark owned by the complainant when the only difference between the domain name and the trademark was the addition of the suffix “.com”). The term “inc” is a generic entity form indicator that is universally known to stand for “incorporated.” Graybar Services Inc. v. Graybar Elec, Grayberinc Lawrenge,WIPO Case No. D2009-1017. “It has long been held that… the addition of a few letters, especially where those letters form a generic expression indicating a company or an activity in which the trademark owner operates does not detract from confusing similarity….” Id. (finding confusingly similar to GRAYBAR).
In light of the foregoing, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered mark and that paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
The burden of proof is on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. Under the UDRP, if a prima facie case is established by the Complainant, then the burden of production shifts to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy enumerates three, non-exclusive ways in which a respondent may demonstrate rights or legitimate interests in a domain name: “Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).
The Complainant submits that the Respondent has neither used, nor made any demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. The Complainant claims that the Respondent is using the disputed domain name to improperly confuse, mislead, and deceive, as well as willfully misdirect Internet users looking for the Complainant or its products to the Respondent’s website or affiliated websites. The Complainant submits in Annex 2 to the Complaint screenshots showing that the disputed domain name redirects to one of several wholly commercial websites containing sexually explicit material, and which purportedly provide the service of connecting the user with a sexual partner in the viewer’s geographic area.
The Complainant submits that the Respondent is not in any way associated with the Complainant and has never sought nor received authorization or a license to use the Complainant’s valuable, famous and distinctive EVEREADY Marks in any way or manner. The Respondent has not and cannot demonstrate that it has ever made any legitimate offering of goods or services under the Complainant’s EVEREADY Marks. The Respondent simply utilizes a domain name that wholly incorporates the Complainant’s mark, with the clear intent to confuse Internet users and improperly redirect traffic to adult content. The text of the disputed domain name in no way suggests adult content, but contains only the Complainant’s widely known mark, in combination with the generic term “inc”. This is a clear violation of the Policy. See, e.g., Graybar Services Inc. v. Graybar Elec, Grayberinc Lawrenge, supra.
The Panel finds that the incorporation of the Complainant’s widely known EVEREADY Marks in the disputed domain name for the purpose of redirecting traffic to sexually explicit websites is evidence of the Respondent’s bad faith as discussed below.
Furthermore, there is no evidence on record that the Respondent has been commonly known by the disputed domain name or that the Respondent is making, or intends to make, a legitimate noncommercial or fair use of the disputed domain name. The Respondent, therefore, has no rights or legitimate interests with respect to the use of the disputed domain name.
Finally, the Complainant submits that the Respondent is not making any legitimate noncommercial use of the disputed domain name. The Panel finds that the Respondent adopted and continues to use a domain name that wholly incorporates the Complainant’s EVEREADY Marks, solely for the illegal and improper commercial purposes of: (i) illegally trading upon the Complainant’s goodwill to confuse, mislead, deceive, and divert consumers; (ii) misdirecting the Complainant’s customers to various commercial adult websites; and (iii) intentionally tarnishing and diluting the Complainant’s valuable and well-known mark.
The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, and the Respondent has failed to demonstrate such rights or legitimate interests.
Accordingly, the Panel finds the Respondent has no rights or legitimate interests in respect of the disputed domain name and that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct;
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
First, the Complainant submits that the Respondent is intentionally attempting to divert, for commercial gain, Internet users to one or more explicit adult websites, by creating a likelihood of confusion with the Complainant’s EVEREADY Marks as to the source, sponsorship, affiliation, or endorsement of the disputed domain name and the websites to which it redirects. It further submits that presumably, each of these websites is compensated for providing its services, either directly by consumers or through the sale of advertising. Where a respondent is found to be diverting users to its website (and/or the websites of associated third parties) to generate traffic and sales commissions for its own commercial benefit, such conduct is uniformly recognized by UDRP panels as constituting bad faith under the Policy. See Microsoft Corporation v. Gioacchino Zerbo,WIPO Case No. D2005-0644; Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin,WIPO Case No. D2003-0888.
Second, the Complainant submits that the use of Complainant’s widely known EVEREADY Marks to redirect consumers to explicit adult websites tarnishes the Complainant’s extremely valuable marks.
Tarnishment has widely been held to constitute bad faith under the Policy where a respondent links pornographic images or wholly inappropriate material to an unrelated trademark. See Christian Dior Couture v. Paul Farley,WIPO Case No. D2008-0008 which stated “[n]umerous Panels deciding cases under the Policy have held that pornographic content on a respondent’s website may constitute a significant indicator of bad faith.” See also Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc.,WIPO Case No. D2001-1314 which held that “Clearly, too, the possible resolution of the Respondent’s website with a pornographic site, whatever the circumstances under which this occurred is a tarnishment of the Complainant’s mark and ongoing evidence of bad faith.”
Given the worldwide fame of the Complainant’s EVEREADY Marks and the incorporation of the identical mark in the disputed domain name, it is not conceivable that the Respondent did not know the Complainant’s trademarks and domain names when registering the disputed domain name.
The strong notoriety and world renown of the Complainant’s trademarks in connection with batteries and flashlights, as presented in Annexes 5 to 8 to the Complaint, attest to the fact that the Respondent could not ignore that the registration and use of the disputed domain name would violate the Complainant’s rights. Furthermore, considering that the disputed domain name is almost identical to the Complainant’s domain name , it is obvious that the Respondent registered the disputed domain name in order to create a likelihood of confusion with the Complainant’s trademarks and thus to profit from its reputation. The registration without authorization of a domain name that is identical to a complainant’s famous mark is evidence of bad faith, and the knowledge of the mark at the time of registration of the domain name suggests bad faith. See PepsiCo, Inc. v. Paul J. Swider,WIPO Case No. D2002-0561.
The Complainant further submits that the Respondent appears to have utilized a privacy registration program. It is clear to the Panel that the Respondent has intentionally hidden its true identity and contact information. “[T]he use of a proxy service would more usually (although not necessarily always) be indicative that the respondent is seeking to hide its activity from scrutiny in proceedings under the Policy. The natural inference from this is a negative one – that the respondent has ‘something to hide”. The Saul Zaentz Company d/b/a Tolkein Enterprises v. Eurobox Ltd. / “The Saul Zaentz Company”,WIPO Case No. D2008-0156. In this case, the Panel draws a negative inference from the Respondent’s use of the privacy registration service.
Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name under paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Cherise M. Valles
Sole Panelist
Date: April 23, 2013
Full & Egal Universal Law Academy